ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Liu Ji

Case No. D2011-0445

1. The Parties

The Respondent is Liu Ji of Harbin, Heilongjiang, the People’s Republic of China.

2. The Domain Names and Registrar

The disputed domain names <swarovskis.uk.com> and <swarovski.us.com> are registered with CentralNic.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2011. On March 9, 2011, the Center transmitted by email to CentralNic a request for registrar verification in connection with the disputed domain names. On the same day, CentralNic transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the word limit of the Complaint, the Complainant filed an amended Complaint on March 16, 2011.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of satisfied the formal requirements of the CentralNic Resolution Policy (the “Policy”) and the Rules for CentralNic Dispute Resolution Policy (the “Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2011.

The Center appointed Francine Tan as the sole panelist in this matter on April 13, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a leading global producer of cut crystals, genuine gemstones and created stones with production facilities in 19 countries and a presence in more than 120 countries. The Complainant asserts that in 2009, its products were sold in 1,014 of its own boutiques and through 819 partner-operated boutiques worldwide. Further, its approximate revenue in 2009 was EUR 2.25 billion. The Complainant uses the SWAROVSKI trade marks in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries.

The Complainant has registered the SWAROVSKI trade marks globally including in China, the United Kingdom of Great Britain and Northern Ireland and the United States of America. In China, the Chinese character equivalent of the SWAROVSKI trade mark is also registered. The Complainant listed the following examples of these trade mark registrations:

Serial No.

Trademark

Category

Reg. No.

Class

Registration Date

1

施华洛世奇

China

385013

14

1989-08-30

2

施华洛世奇

China

361346

14

1989-09-20

3

China

346372

14

1989-04-20

4

SWAROVSKI

UK

1344959

21

1989-10-13

5

SWAROVSKI

UK

1344953

08

1989-12-01

6

SWAROVSKI

UK

1344955

11

1989-12-01

7

SWAROVSKI

US

3864495

16

2010-10-19

8

SWAROVSKI

US

934915

14, 21

1972-05-30

9

SWAROVSKI

US

1739479

8, 11, 14, 18, 21, 25

1992-12-15

The Complainant claims that substantial time, effort and money have been spent advertising and promoting the SWAROVSKI trade marks throughout China, the United Kingdom and the United States. As a result, the SWAROVSKI trade mark has become famous and well-known in those countries. The Complainant also claims to have developed an enormous amount of goodwill in the SWAROVSKI trade mark internationally, and the public has come to associate the SWAROVSKI trade mark with its high quality merchandise.

The Complainant has registered numerous domain names, including <swarovski.com> and <swarovski.net>, which point to the Complainant’s official website located at “www.swarovski.com” (the “Complainant’s website”).

The Complainant claims to have first encountered the Respondent in relation to the <swarovski.uk.com> domain name (“the earlier domain name”). The website at the earlier domain name was used to sell purported Swarovski products online. When the earlier domain name was detected by the Complainant, the Respondent was the named registrant. Shortly after the Complainant attempted to contact the Respondent to settle the matter amicably, the earlier domain name was transferred by the Respondent to a Mr. Sami Hooti. The Complainant initiated an action before CentralNic and the Center in relation to the earlier domain name. Pursuant to the administrative panel decision in Swarovski Aktiengesellschaft v. Sami Hooti,
WIPO Case No. D2010-1704 (the “Sami Hooti Case”), the earlier domain name was transferred to the Complainant. Following the panel decision and during the transfer process, it was discovered that the earlier domain name was set to redirect to <swarovskis.uk.com> which was registered by the Respondent one day after the panel decision in the Sami Hooti Case was notified to the parties.

The Complainant thereafter conducted performing a “reverse whois” search which revealed that the Respondent had registered four domain names containing the SWAROVSKI trade mark. In addition to <swarovskis.uk.com> (“the 1st disputed domain name”) the Registrant had also registered <swarovski.us.com> (“the 2nd disputed domain name”), <swarovskicrystal.at> and <swarovski-crystal.org>. The “reverse whois” data also showed the Respondent had registered multiple other domain names which use third party trade marks, e.g. <pandorasjewelry.org>, <pandorabracelet.uk.com> and <victoriassecret.us.com>. These domain names incorporate the trade marks PANDORA and VICTORIA’S SECRET which the Complainant asserts are famous marks.

The 1st disputed domain name and website

The Respondent registered the 1st disputed domain name on December 7, 2010, i.e. one day after the panel decision in the Sami Hooti Case was notified to the parties. Upon gaining control of the earlier domain name pursuant to the panel decision in the Sami Hooti Case, the Complainant was able to redirect the earlier domain name to the Complainant’s website. The Complainant found that the 1st disputed domain name resolved to a website which continued to display the content that the website at the earlier domain name previously displayed. However, in mid-January 2011, the Respondent’s website at the 1st disputed domain name was changed so that it redirected Internet users to a website containing a link to the Complainant’s website.

The Respondent is not only using the SWAROVSKI trade mark on the website previously displayed at “www.swarovskis.uk.com” but is also operating an online shop which utilises the SWAROVSKI trade mark throughout and offers for sale goods similar to those produced and sold by the Complainant. The Complainant asserts that this is a blatant infringement of the Complainant’s SWAROVSKI mark. Moreover, by registering numerous other domain names which incorporate the SWAROVSKI mark and third party trade marks, the Respondent has demonstrated a flagrant disregard for the rights of the Complainant and other third parties in the trade marks they own.

A. Complainant

(i) The 1st disputed domain name is confusingly similar to the SWAROVSKI trade mark. The only distinction between the SWAROVSKI trade mark and the 1st disputed domain name is the addition of the letter “s”. It has been well established by previous UDRP panels that the addition of the plural signifier “s” is not enough to avoid a finding of confusing similarity. Although at the time of filing the Complaint, the website located at the 1st disputed domain name redirected to a website containing a link to the Complainant’s website, it is noteworthy that the Respondent had previously used the 1st disputed domain name to operate an online shop and could at any time in the future create another infringing website at the 1st disputed domain name.

It has been recognised by previous UDRP panels that the content of a website at a domain name is irrelevant in the finding of confusing similarity and the real test for confusing similarity is whether a comparison between the Complainant’s trade mark and the domain name concerned are such that there is a likelihood of confusion. (Cases cited: Ansell Healthcare Products Inc.v. Australian Therapeutic Supplies Pty, Ltd.,
WIPO Case No. D2001-0110 and Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO,
WIPO Case No. D2000-0138.)

(ii) The 2nd disputed domain name is identical to the SWAROVSKI trade mark. In the Sami Hooti Case relating to the earlier domain name <swarovski.uk.com>, the administrative panel found that “The Complainant indisputably holds SWAROVSKI marks, and the Domain Name is identical to those marks”.

Numerous other UDRP panels have determined that the addition of a general top level domain (gTLD) or country code designation (ccTLD) does not distinguish a domain name from a complainant’s mark and such domain names are therefore identical to a complainant’s mark. Therefore the addition of “.uk.com” cannot differentiate the Respondent’s domain name in any way from the SWAROVSKI trade mark.

UDRP panels have also recognised that consumers expect to find a trademark owner on the Internet at a domain name address comprising company’s name or mark. (Case cited: Dr. Michael Crichton v. Alberta Hot Rods,WIPO Case No. D2002-0872.) Internet users who intend to visit one of the Complainant’s websites may inadvertently type the 2nd disputed domain name into the address bar of their web browser only to be directed to the Respondent’s website. Similarly, a consumer may type “Swarovski US” into a search engine where the <swarovski.us.com> domain name appears within the top 5 results. This type of initial interest confusion or diversion of traffic is illegal because it wrongfully capitalises on the Complainant’s goodwill in the SWAROVSKI trade mark to divert Internet traffic to the Respondent’s website at the 2nd disputed domain name.

The Complainant asserts, secondly, that the Respondent has no rights or legitimate interests in the disputed domain names.

(i) The Respondent has no connection or affiliation with the Complainant and has not received any licence or consent, express or implied, to use the SWAROVSKI mark in the disputed domain names or in any other manner.

(ii) The Respondent has never been known by either of the disputed domain names and has no legitimate interests or rights in the SWAROVSKI mark. UDRP panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. (Case cited: Drexel University v. David Brouda,
WIPO Case No. D2001-0067.)

(iii) The SWAROVSKI mark has been used in the disputed domain names to create the impression of association with the Complainant. The Respondent has also registered <swarovski-crystal.org> and <swarovskicrystal.at>. The Respondent is currently using the 2nd disputed domain name and previously used the 1st disputed domain name and the earlier domain name to sell purported Swarovski products. The Respondent’s misdirection of Internet traffic to the website at the 2nd disputed domain name cannot be considered to be a bona fide offering of goods or services.

(iv) The misappropriation of the disputed domain names was no accident. The use of the SWAROVSKI trade mark is clearly for the purpose of misleading consumers into believing that the Respondent and the disputed domain names are associated with or endorsed by the Complainant.

The Complainant asserts, thirdly, that the disputed domain names were registered and are being used in bad faith.

(i) It is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI mark at the time of registration of the disputed domain names. Since the 1st disputed domain name was registered after the Respondent was contacted by the Complainant to amicably settle the dispute, the Respondent clearly had to be aware of the Complainant and its rights in the SWAROVSKI mark.

(ii) The selection of the disputed domain names, which incorporate the famous SWAROVSKI mark in its entirety, cannot be a coincidence.

(iii) The website at the 2nd disputed domain name offers to sell a variety of products purporting to be Swarovski products. These would not have been advertised on the Respondent’s website if the Respondent were unaware of the Complainant’s reputation and SWAROVSKI trade mark.

(iv) The Respondent’s registration of other domain names which use third party trade marks evidences a pattern of copying registered trade marks belonging to third parties. Previous UDRP panels have found that such a pattern of registering multiple domain names that are identical or confusingly similar to famous trade marks is proof of bad faith. The Respondent has also registered multiple domain names, all of which contain the SWAROVSKI mark. In General Electric Company v. Normina Ansalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452, the panel held that "The registration of several names corresponding to Complainant’s trademarks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith with the meaning of paragraph 4(b)(ii) of the Policy".

(v) The registration of a famous mark like the SWAROVSKI mark as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith.

(vi) The Respondent is not currently using the 1st disputed domain name to operate a website of his/her own. Bad faith can be inferred from the strong reputation and wide recognition of the SWAROVSKI mark and the fact that the Respondent continues to maintain the registration of the 1st disputed domain name despite his/her awareness of the Complainant’s rights in the SWAROVSKI trade mark.

(vii) It is unlikely that the Respondent would be able to prove good faith use of the 1st dispute domain name; it is difficult to conceive how the 1st disputed domain name can be legitimately used by the Respondent without infringement of the Complainant’s SWAROVSKI trade mark.

(ix) The Respondent must also have expected that the use of the 2nd disputed domain name would cause harm to the Complainant or disruption to its business in contravention of paragraph 4(b)(iii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are different policies, both share substantial similarities and, as such, the Panel finds it appropriate to rely on authority concerning the UDRP in resolving the present dispute.

A. Identical or Confusingly Similar

The Complainant has clear registered and unregistered trademark rights in SWAROVSKI. The 1st and 2nd disputed domain names incorporate the Complainant’s mark entirely. The addition of the letter “s” in the 1st disputed domain name is insufficient to avoid confusion.

Therefore, the Panel finds that the 1st and 2nd disputed domain names are identical and/or confusingly similar to the Complainant’s trade mark.

The first criterion under paragraph 4(a) of the Policy is therefore met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides three circumstances, amongst others, that may constitute evidence of rights or legitimate interests in a domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. The Respondent has had the opportunity to rebut the assertions made but has not done so. The Panel is thus left with no basis to find that the Respondent has any rights or legitimate interests in respect of the disputed domain names. In fact, the evidence points to the contrary and all the more so in view of the results of the “reverse whois” search, from which the Panel draws a negative inference. In view of the strong reputation of the SWAROVSKI trade mark, it is not conceivable to the Panel how the Respondent would have been able to prove that he/she has rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The second criterion under paragraph 4(a) of the Policy is therefore met.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy sets out a number of circumstances that would, in particular but without limitation, be evidence of registration and use of a disputed domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name.

(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.

(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.

(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.

(v) The Respondent has provided false contact details to CentraNic.

The Panel finds that the evidence furnished by the Complainant paints a classic case where the Respondent “has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location”. The Respondent’s websites have expressly reflected the SWAROVSKI name and trade mark in relation to crystal jewelry and decorative objects, all of which demonstrate awareness of the Complainant’s mark and an intention to capitalize on its fame. The Panel is persuaded by the evidence and arguments submitted by the Complainant, which have not been rebutted by the Respondent. In the circumstances, the only logical explanation for the Respondent’s choice of the disputed domain names is that it was for the purpose of attracting and misleading Internet users to the Respondent’s websites for commercial advantage. This constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Panel also agrees with the Complainant’s assertion that the registration of a domain name incorporating a famous mark by a party that has no legitimate connection with the mark or relationship with the owner of the mark generally constitutes bad faith registration. This principle has been established in previous UDRP panel decisions. For the same reason therefore, the continued passive holding of the 1st disputed domain name by the Respondent cannot constitute good faith use.

Accordingly, the Panel finds that the Respondent registered and used the disputed domain names in bad faith.

The third criterion under paragraph 4(a) of the Policy is therefore met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <swarovskis.uk.com> and <swarovski.us.com> be transferred to the Complainant.